State Farm Mutual Automobile Insurance Company v. UnderHost Networks Ltd
Claim Number: FA1210001466947
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is UnderHost Networks Ltd (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <featuredstatefarmbroker.com>, registered with Dynadot, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 11, 2012; the National Arbitration Forum received payment on October 11, 2012.
On October 11, 2012, Dynadot, LLC confirmed by e-mail to the National Arbitration Forum that the <featuredstatefarmbroker.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 12, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 1, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@featuredstatefarmbroker.com. Also on October 12, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 14, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <featuredstatefarmbroker.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <featuredstatefarmbroker.com> domain name.
3. Respondent registered and used the <featuredstatefarmbroker.com> domain name in bad faith.
B. Respondent failed to submit a timely Response in this proceeding.
Complainant is a nationally known company that has been conducting insurance business under the name STATE FARM since 1930. Complainant holds the following registered trademarks for the STATE FARM mark with the United States Patent and Trademark Office (“USPTO”), and the Canadian Intellectual Property Office (“CIPO”).
USPTO Reg. No. Reg. Date
STATE FARM INSURANCE 1,125,010 Sept. 11, 1979;
STATE FARM 1,979,585 June 11, 1996;
STATE FARM BANK 2,319,867 Feb. 15, 2000;
CIPO
STATE FARM INSURANCE TMA420,468 Dec. 10, 1993; &
STATE FARM INSURANCE TMA424,004 Mar. 4, 1994.
Respondent registered the disputed domain name on June 28, 2012. Respondent’s disputed domain name resolves to an error page with no content.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The Panel finds that Complainant’s trademark registrations demonstrate that Complainant possesses rights in the STATE FARM and related marks pursuant to Policy ¶ 4(a)(i). See Dollar Fin. Group, Inc. v. Bankshire Corp., FA 1013686 (Nat. Arb. Forum July 30, 2007) (finding that the complainant established rights in its mark by registering the mark with the USPTO and CIPO).
Respondent’s <featuredstatefarmbroker.com> domain name consists of the STATE FARM mark without the space between the terms, along with the added descriptive terms “featured” and “broker” and the generic top-level domain (“gTLD”) “.com.” The removal of a space, the addition of a generic or descriptive term, and the addition of a gTLD all fail to adequately distinguish a disputed domain name from a mark. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Thus, the Panel finds that Respondent’s <featuredstatefarmbroker.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent has no right or legitimate interest in the disputed domain name and is not commonly known by the disputed domain name. Complainant states that Respondent is not associated with, affiliated with, or sponsored by Complainant, and that it did not authorize Respondent to register the disputed domain name or use the STATE FARM mark. Complainant believes that Respondent has never been known by or performed business under the domain name at issue and does not possess independent intellectual property rights in the name. The Panel notes that the WHOIS record for the disputed domain name identifies the registrant as “Under Host Networks Ltd.” Therefore, the Panel concludes that Respondent is not commonly known by the disputed domain name and thus lacks rights and legitimate interests in the disputed domain name according to Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant contends that Respondent’s disputed domain name resolves to an error page with no content. Complainant argues that as of the date of the Complaint, there was no legitimate content associated with the disputed domain name and no indications that legitimate content would be forthcoming. The Panel therefore finds that Respondent is not making a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent’s registration of the disputed domain name is clearly intended to attract individuals seeking information on Complainant and create confusion as to the source or sponsorship of the site, which is evidence of bad faith registration and use. The Panel notes, however, that Policy ¶ 4(b)(iv) requires commercial gain in addition to efforts by Respondent to attract consumers and create confusion, and Complainant has not provided any evidence that Respondent derives any commercial gain from the disputed domain name. In fact, Complainant argues that the disputed domain name resolves to a website with no content other than an error message. The Panel thus declines to make a finding of bad faith registration and use under Policy ¶ 4(b)(iv).
When conducting a Policy ¶ 4(a)(iii) analysis, the Panel may consider the totality of the circumstances and is not limited to the enumerated factors in Policy ¶ 4(b). See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples of [bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also Cellular One Grp. v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).
Respondent’s disputed domain name resolves to a website with no content, displaying only an error message, indicating that Respondent has no legitimate reason for having registered the disputed domain name. The Panel finds that Respondent’s failure to actively use the disputed domain name indicates that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith).
Complainant asserts that Respondent knew or should have known of Complainant’s long-term use of the STATE FARM mark. The Panel agrees and finds that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the mark, pursuant to Policy ¶ 4(a)(iii). See Univision Comm’cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent’s contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant’s rights in the UNIVISION mark when registering the disputed domain name).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <featuredstatefarmbroker.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: November 20, 2012
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